| Proper use of your mark is necessary to both
establish and maintain your trademark rights. Sometimes a
trademark can become less distinctive
through misuse. It can even become generic
if others begin using the mark as if it were the proper
name for the type of good or service sold, as was the
case with the mark, ESCALATOR. Your management and
control over how the mark is used will determine to a
large extent whether or not you will be able to preserve
your rights in a mark. Proper use of your mark will
clarify that the mark is a brand and not a type of
product. What's more, failure to use your mark properly
can be used against you in court, in the event your
challenger claims the mark is not distinctive. This can
happen when the court views your own misuse of your mark
as an admission that you did not consider the mark your
proprietary property in the first place. The following
rules will help you establish trademark rights, and
prevent problems that can erode the enforceability of
your trademark rights, once established.
"Affix" the trademark to the goods
or services provided
Affixing your trademark to goods and services is
necessary in order to demonstrate that a mark is used
in commerce, which is a fundamental requirement for
trademark ownership in the United States. For a trademark
to be "affixed" to goods, the mark should
ideally be either placed on the goods themselves, or on
their containers or attached tags or labels. The
affixation requirement for goods may also be satisfied if
the mark is prominently featured on a conspicuous display
associated with the goods. If none of the above are
possible, the mark may be used on documents associated
with the sale of the goods, as a last resort. For
services, a trademark is "affixed" if it is
used in the sale or advertising of the services, as long
as it is used in direct and explicit reference to the
services provided.
Always use the mark as
an adjective
It is very important to always use the
mark as if it were an adjective, and never use it as a
noun or a verb. For example, do not allow marketing
material to read, "AURORA is the best cat litter on
the market." Instead say, "AURORA brand cat
litter is the best on the market," or even
"AURORA cat litter is the best...." Similarly,
makers of the XEROX brand copier probably cringe when
they her people say they are XEROXING instead of saying
they're making copies on the XEROX copier. These tips may
seem like ridiculous distinctions to some. However, the
consequences for dismissing this advice are great. If
your mark is challenged on the basis that it is generic,
you will have a much harder time arguing that your mark
is not generic when you have treated your mark as if it
were a class of goods, rather than a single brand in a
class of goods.
Set out the mark from surrounding text
You should italicize, underline, capitalize
and/or bold the mark when it appears in text in order to
set it out from the generic word for the product. This
helps maintain the distinctive nature of a mark in the
minds of consumers.
Provide notice next to your mark whenever
possible
You provide notice of trademark rights when you
use of the symbols, TM, SM or ® next to your mark. You
can also provide notice by using a phrase such as
"XYZ Company is the registered owner of the
trademark ABC," or "Reg. U.S. Pat. Off."
Use the former phrase whenever ownership of the trademark
is not obvious from the context in which it is used. Click here for more
information on using symbols. Again, failure to
notify the public that a particular word, phrase or
symbol is your proprietary property, you will have a very
hard time convincing a court of the same. More
importantly, perhaps, by providing notice next to your
symbols, you're alerting the world to your claim of
right, and will deter others from innocently adopting
similar symbols for their products.
Avoid plural or
possessive forms of the mark
Never use a mark in the plural form, for instance NIKES
or REEBOKS. In these examples, the plural form encourages
the public to view these marks as if they were synonyms
for shoes. A possessive form, such as NIKE's or REEBOK's
is similarly problematic.
Don't dissect the mark
by abbreviating
If your mark contains more than one lingual or graphic
component such as TOY HAVEN, use both words instead of
referring to the company as the HAVEN. Dissecting
trademarks can cause them to lose their distinctive
quality in the minds of consumers.
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